Honeyhole Sandwiches, Inc. filed a service mark application to register the mark HONEYHOLE SANDWICHES “restaurant with bar specializing in serving proprietary unique sandwiches, local beers and alcohol in a vibrant, eclectic environment.” This is a very detailed description to begin with when filing a trademark application, and usually you do not see much detail in a goods or services description until the trademark application examination requires it to overcome a registration refusal from the Trademark Office. Unfortunately, the detail voluntarily provided by Honeyhole Sandwiches at the beginning of the registration process did not prevent a registration refusal. The Trademark Office refused registration of the HONEYHOLE SANDWICHES mark on the ground that it was likely to cause confusion with previously registered mark HONEY HOLE for “alcoholic beverages except beers.”
In In re Honeyhole Sandwiches Inc., as it has stated so many times in the past, the Trademark Trial and Appeal Board said that the relatedness of the goods or services determination is based on the goods and services descriptions in the application and registrations at issue. The goods and services need not be identical to find likelihood of confusion. Rather, they need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods and services originate from or are associated with the same source. In the case of food or beverage items and restaurant services, the TTAB looks for evidence of a specific commercial relationship between the goods and restaurant services that indicates consumers would be likely to believe an association exists between the specific food or beverage items and restaurant services.
Honeyhole Sandwiches argued that its identification of services specifically states that it specializes in sandwiches not alcoholic beverages. However, the Board pointed out that the services description, that Honeyhole Sandwiches voluntarily chose, also indicates that it serves “local beers and alcohol.” And to compound the problem for Honeyhole Sandwiches, its menu contains the label “Honeyhole Cocktails.” There was also evidence offered that showed restaurants private labeling their own alcoholic beverages. Even though Honeyhole Sandwiches does not specialize in alcoholic beverages, the Board found consumers were likely to mistakenly believe there was a connection between HONEY HOLE whiskey and Honeyhole Sandwiches restaurant.
What can we learn from this case as trademark searchers? First, it is another example of how our intuition can lead us astray when it comes to assessing the critically important relatedness of goods factor. Second, it is a reminder that we must search broadly during the search process. If we search with a too narrow description, we are setting ourselves up to miss something important. Third, we can add value to our search results by helping our clients with their risk tolerance. Clients appreciate not only identifying landmines, but also how to potentially diffuse or avoid them.
The Wall Street Journal reported that after years of being defunct, the TWA terminal at New York’s JFK Airport is scheduled to reopen in early 2019. The refurbished terminal will include a hotel and have the nostalgic 1962 look when it first opened. Right now, you can get a sneak peek of the TWA Hotel lounge on the 86th floor of New York’s One World Trade Center in Manhattan. TWA was acquired by American Airlines in 2001.
TWA was an airline only back in the day so extending the its mark into hotel services is an extension that may not available 18 years after the airline was acquired by American Airlines. Do you think American Airlines conducted a trademark search and the filed federal trademark applications for the TWA mark for hotel services? Click HERE and watch the video to find out. Leave a comment and let us know if you got the right answer.
Apparently there is a finite number of good trademarks, and we are running out of them. Two New York University School of Law professors published an article it the Harvard Law Review titled “Are we running out of trademarks? An empirical study of trademark depletion and congestion.” The authors acknowledge that “[f]irms can obviously coin new words or phrases of ever-increasing length to avoid conflicts with already-registered marks.” But then say “it is just as obvious that given the limits of human cognition and communication, incumbent firms using shorter, less complex, more familiar, more easily pronounced, and more evocative marks will enjoy a significant competitive advantage over new firms that must resort to brand names that are less effective along these dimensions and for that reason remain unclaimed.”
In other words, according to the authors of this article, terms found in a dictionary are “good trademarks” because consumers have some familiarity with the terms. Anything else is a bad trademark because the trademark owner needs to expend some effort to help the consumer understand the brand. If the authors were talking about domain names, I would agree that there are a finite number of goods domain names because of the nature of how consumers search the Internet. But trademarks are an entirely different animal than a domain name.
Ask any naming professional if they recommend their clients adopt dictionary terms as trademarks that describe the goods or services being offered and they would say never. They certainly would not agree that those are good trademarks. The trademark protection issues involving these marks notwithstanding, descriptive marks make it difficult to stand out from the crowd. Any firm that adopts a known term for goods or services other than what is identified in a dictionary definition, will need to expend the effort to educate consumers about the connection between the mark and the goods or services. The same is true of a coined term. That does not make the coined mark a bad trademark. In fact, it may grow to be a famous mark. I am sure KODAK does not regret the choice it made to coin a trademark.
The authors also focus only on word marks when so much other matter functions as “good” trademarks. Indeed, the Lanham Act specifically states that any matter can function as trademark so long as it is capable of identifying the source of the goods or services. Designs, for example, are intimately involved in brand strategy and relied upon as much if not more than the words themselves. We know from experience that toddlers recognize logos before they are able to read. I doubt the authors would argue we are at risk of running out of good artistic designs.
Because the term on a registered trademark can theoretically be forever, it can make the naming process more challenging. But that is more reason to engage a naming professional early in the company or product lifecycle.
On August 8, 1958, President Eisenhower signed an amendment to the Trademark Act that created the Trademark Trial and Appeal Board. The TTAB is an administrative tribunal within the United States Patent and Trademark Office that handles opposition and cancellation proceedings between parties and appeals by applicant’s from refused trademark applications.
Around 70% of cases commenced before the TTAB are opposition or cancellation proceedings, but about 75% of the cases decided on the merits are appeals from refused applications. These statistics are a little surprising considering the TTAB affirms about 85% of registration refusals, so taking an appeal all the way to a decision is more likely than not a loosing fight.
Prior to the establishment of the TTAB, appeals from registration refusals were heard by the Commissioner of Patents and opposition and cancellation proceedings were heard by the Examiner of Trademark Interferences with appeals going to the Commissioner of Patents. The volume of matters was the reason for establishing the TTAB.
In 2015, the U.S. Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, held that TTAB decisions “can be weighty enough to ground issue preclusion” when the parties that were involved in a TTAB case later are involved in a case in a U.S. district court. In other words, TTAB decisions may, in appropriate circumstances, bind the district court and bar the parties from relitigating the issue in that subsequent court proceeding.
The TTAB has come along way in 60 years with its decisions having more influence on the marketplace. Consequently, it is increasingly important to pay attention to the TTAB’s decisions during the trademark search stage.
The Trademark Trial and Appeal Board in In re C G Asset Management Pty Ltd recently held that the mark THE SAISON D’HERETIQUE for beer was confusingly similar to the registered mark HERETIC BREWING COMPANY also for beer. The applicant conceded that a definition of SAISON is a type of ale, but argued that SAISON also means “season” in French and that to French speakers SAISON D’HERETIQUE would be understood as “season of a heretic.”
The Board held that while its decision on the similarity of the marks must be based on the marks in their entirety, the only way to consider the mark in its entirety is to consider every word in it including all salient meanings of those words. Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks. However, there are limitations on the doctrine:
- If the foreign language is not common, the doctrine does not apply;
- When it is unlikely that an American buyer will translate the foreign mark and will take it as is, the doctrine does not apply; and
- The doctrine of foreign equivalents is a guideline, not a rule.
In the C G Asset Management case, the Board held that beer drinkers would under SAISON to mean a style of ale not “season.”
What this case teaches us about searching is that as searchers we need to know the market for the goods or services with which the mark will be used. If it is unlikely that a relevant consumer in a particular market is unlikely to stop and translate the foreign word, then we should be comparing the foreign word to the English word in terms of sight, sound, and meaning. That means some foreign words will be similar to English words in meaning only, and because of the differences in sight and sound, the marks overall create different commercial impressions.
In 2014, the San Diego Comic Convention sued the organizers of the Salt Lake Comic Convention for trademark infringement. San Diego won and Salt Lake was permanently enjoined from using COMIC CON and ordered to pay $20,000 to San Diego for corrective advertising.
If Salt Lake had used BOB to conduct a search prior to adopting SALT LAKE COMIC CON, they would have learned that while San Diego had federally registered SAN DIEGO COMIC CON, they also would have learned that DENVER COMIC CON was a pending application and this application was not refused registration based on SAN DIEGO COMIC CON.
At this point, Salt Lake would have had a decision to make. If the use of COMIC CON was essential to making its conference a success, it could device a strategy for dealing with a complaint from San Diego. It is important that at this point the decision is based on a rationale business decision and not on whether you have what appears to be the better argument. First, juries and even some judges are unpredictable. So even if you have the better case, that does not alway mean you will win. Second, even if you are right, that decision can end up costing you a lot of money and not having any real effect on your business.
Hard to imagine that Salt Lake needed to use COMIC CON to have a successful conference. But hopefully they went into the decision to use COMIC CON with eyes wide open. Nothing worse than being surprised with a demand letter.
The Trademark Trial and Appeal Board recently held in In re Northern Brewer, LLC that wine and kits for making wine are related goods. In determining whether an applicant’s goods are related to a registrant’s goods, it is not necessary that the goods of applicant and registrant be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes to establish that the goods are related in some manner or that conditions and activities surrounding marketing of these goods are such that they would or could be encountered by same persons under circumstances that could, because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer.
The Examining Attorney made of record 18 active, third-party registrations showing that the same entity registered a single mark identifying wine and kits for making wine. The Examining Attorney also submitted Internet evidence of a few wineries that sold wine and wine making supplies. On this evidence, the Board concluded that wine and wine making kits are related.
This case demonstrates the sparse evidence the Board will rely on to make a finding of relatedness. The Internet evidence is not compelling with respect to what consumers will think about relatedness because when a consumer is in a winery, it knows the supplies are coming from that winery. What would have been more persuasive is if a liquor store sold both wine and wine making supplies. The same can be said about 18 third-party registrations.
Intuitively, wine and wine making kits do not appear to be related. They are more often than not sold in separate channels to different target customers. But that is why it is crucial to search the Trademark Office and consider the relatedness of goods factor when you do.
According to the Trademark Manual of Examining Procedure, use of a mark by a company related to the applicant is allowed to support the registration of mark. However, the USPTO does not require an application to specify if the applied-for mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act. So the applicant is not necessarily always the company using the applied for mark in the marketplace.
If the commentary over the last couple years surrounding trademark bullying taught us anything when it comes to clearing trademarks it is that the identified applicant matters. Some applicants are much more aggressive than others when it comes to enforcement. So searching the marketplace only for a similar mark may cause you to miss important information about who will actually direct any enforcement of that mark. You may find a mark that is close, but in your estimation not that close only to find out later that Kellogg or some other large company actually owns a federal registration for the mark.
It is another reason why using BOB to conduct a search of the USPTO Trademark Database is always necessary before launching a company or new product.
The Board in Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages recently held that restaurant services are related to vodka. The Board noted that when comparing restaurant services to alcoholic beverages, the Board needs to consider more than the fact that restaurants sell alcoholic beverages. In situations where the relatedness of goods or services is obscure or not generally recognized, something more than the mere fact that the goods or services are used together is required.
Although the Board found that Tao Licensing promoted vodka drinks being offered at its nightclubs, what was more interesting was the Board’s finding that private-label bottling is prevalent in the restaurant and nightclub industries, and is becoming more prevalent especially in well-known restaurants and nightclubs. This finding begs the question of whether the relatedness of restaurant services and alcoholic beverages is no longer obscure or not generally recognized such that there is no longer a requirement for a plaintiff to “show more” before a finding of relatedness will be made.
This decision also highlights the need to conduct some due diligence after a signal from BOB is given. If a red light or yellow light is given by BOB based on a relatedness of goods issue, you need to look into the relationship a little more to see if the marks cited by BOB are really problematic.
It is no secret that how we learn in our society is changing. More and more online courses are offered so we can learn in environments of our choosing and at times that work with when we want to learn. We have this flexibility because most all of the resources we need to learn – from lectures to reference material – are available online. What is less readily available is instant feedback on an assignment that is completed as part of the learning process. Instead, the student needs to wait for a teacher to review his or her work. But some of the best learning opportunities occur when the student can get immediate feedback that either validates what the student did or gives the student the opportunity to self-diagnose what went wrong so the mistake is not made in the future.
BOB is the tool that gives students immediate feedback on their trademark searches so they can see if they are doing the search the right way. Think of BOB as the trademark calculator. BOB will change the way students learn how to conduct trademark searches, making them more proficient searchers, which hopefully will lead to fewer trademark conflicts in the future.